Confused about the trademark application process in the USA? Here’s how it works

A trademark is a word, a symbol, or a series of words, legally registered (or established by use) to represent a company or product. It’s used to distinguish your business’s goods or services from those of other traders. For this reason, it’s really important that you sort out the legalities surrounding your trademark if you’re considering expanding your business to the US.

But, just because you’re using a trademark in the UK doesn’t mean you can use it the USA.

Instead, you’ll need to register your trademark if you want to use it in the USA as you expand overseas, and therefore you’ll need to understand the Trademark application process.

Unfortunately, the trademark application process in the USA is quite complicated, and it can be very time consuming too. However, it’s certainly possible to register your trademark, and it’s really important that you do so if you want to be able to use your trademark without risk of someone else using it too, or opening your business up to legal action.

Here’s how the trademark application process works:

Trademark search

First, you’ll need to consult your attorney (or find a US lawyer if you haven’t done so already). Your attorney will begin the trademark application process by doing a ‘trademark search’. This search is performed for the purpose of checking whether there are any pending applications, existing third party registrations or even common-law marks that might pose a problem for your business using your trademark.

The trademark search is usually done by ordering from a search company and analysing a formal search report. The outcome of this report will let you know whether there are any major problems for your business to contend with, or whether you can just go ahead and start the trademark application process. All being well, you’ll be able to proceed.

Application

So how do you actually register your trademark? Well, there are two options. The first option is to take advantage of the existing international protocol between the USA and UK. The international protocol means that if a UK business wants to use its trademark in the USA covering the same general types of goods and services it wants to ‘protect’ in the USA as it does in the UK, it can use its existing UK registration to generate an ‘international application’ to file in the USA.

There are two downsides to doing this, however. Firstly, UK trademarks are registered in a very broad way, which is something the USA Patent and Trademark Office (USPTO) doesn’t like – the USPTO prefer that the goods and services you’re selling are specifically described. Secondly, sometimes the goods and services you’ve described in the UK might fall under a different ‘class’ in the USA, which means you’ll need to change this information too.

The result of these two problems means you’ll need to spend a lot of time ‘adapting’ your goods and services description and class so that it satisfies the USPTO. This is the step that can make the trademark application process very time consuming, and often very frustrating for UK businesses! So, if you go down this route, you’ll need to set aside time to make the necessary adaptions.

But, there is an alternative: you could have your US attorney prepare a USA trademark application, bypassing the function of the international application protocol. This may be more expensive, but if you’d prefer to invest your time in other areas of the business when expanding to the USA, it might be worth paying your attorney’s fees.

Evidence and ‘use’

Have you heard that the USA is a ‘use country’? This means that (even with the correct paperwork and adaptations), a USA trademark registration won’t be granted unless you can present evidence that you’ve used the mark commercially in the US for at least one item shown in the particular trademark class concerned. If you can’t do this, just make sure that you apply to register your trademark for ‘future intent to use’ – you’ll need to present evidence of actual use later down the line.

The exception to all these rules surrounding ‘actual use’ and ‘future use’ is when you use the international protocol to register your trademark: although you’ll have to adapt descriptions and classes, you won’t need to concern yourself with evidence of actual or future use.

So what’s the best way to proceed in the trademark application process?

As you can see, there’s no straightforward way to registering your trademark in the USA. It’s a time-consuming process whichever approach you take, so you’ll just need to decide what kind of admin work you want to perform.

If you’re happy to pay for an attorney, they’ll advise you on the best way to proceed and will do the necessary adaptions or evidence-presenting for you. However, if you’re going to apply to register your trademark without the help of a lawyer, consider using the existing international protocol: so long as you work closely with the USPTO to ensure you’re making all the necessary adaptations to your UK documentation, you should find that the process is manageable.